Why file a continuation application before your utility patent is granted?
“I don’t know what I don’t know.” This axiom rings true for me especially when it comes to the future. My hunch is that most patent owners cannot foresee all the ways in which competitors will try to design around their patents. Filing a continuation application before the grant date of your utility patent keeps pendency alive, thereby enabling you to pursue additional claims with the earlier priority date of your prior patent filing(s). There is no option to file a continuation application after your patent has issued.
Competitors’ attempts to design around your patent
The scope of your patent protection will be defined by the claims which have now been allowed by the patent examiner. Competitors commonly study patent claims to see if they can design around them. In fact, there’s nothing wrong with that. The public has a right to know what you patented, which includes the right to sell products and services that avoid infringement. It’s called fair competition.
Hindsight is perfect
The problem for patent owners is that they cannot prophetically block all the ways in which competitors will nearly copy the patented product without infringing the claims. Only time will tell how clever folks can get in avoiding certain claim limitations.
What is a placeholder claim?
Having a continuation application in place serves as a placeholder, meaning that the continuation application may contain a very simple claim upon initial filing. The plan would be to replace the placeholder claim with updated claims after the patent owner has an opportunity to see how the marketplace is reacting to their issued patent. When it becomes clear how competitors are attempting to design around the claims of the granted patent, the patent owner may then file a Preliminary Amendment to replace the placeholder claim in the continuation application with strategically drafted claims aimed at covering the competing products while still finding support in the specification.
When must a continuation application be filed?
A continuation application is also known as a “child” application while the pending application to which it claims priority is the “parent” application. A child application must be filed while the parent application is pending – i.e., not abandoned or issued.
It’s too late to file a continuation application if the parent patent application has already issued. Therefore, it’s critical to plan ahead and time the payment of the issue fee to give yourself enough time to file the continuation.
To err on the side of caution, it’s best to have the continuation prepared and ready to be filed at the time you pay the issue fee. If that is not possible or you prefer to pay the issue fee sooner, then it would be prudent to have to continuation ready within a couple of weeks after paying the issue fee. At a minimum, you can file the continuation promptly with a single placeholder claim and go back with a Preliminary Amendment to add more claims.
The critical task is to file the continuation while the parent application is still pending.
Boost value of your patent portfolio
If you are open to licensing or selling your IP, pending patent applications can be highly valuable. A potential licensee or acquirer wants to know if they have the option to pursue additional claims to enforce against the competition.